Highway pioneers

Mexico has long accepted the substantive patent examination results from key territories. The signing of Patent Prosecution Highway programs will speed up the process, as Andres Esteva explains.

The Mexican Patent and Trademark Office (MXPTO) has, for decades, accepted the substantive examination results for applications with American, European and Japanese priorities, and requested to amend the claims of the Mexican patent applications to match those as granted in the corresponding US, EP or JP patents. Furthermore, the MXPTO usually tracks the foreign prosecution, most usually the prosecution carried out at the US Patent and Trademark Office (USPTO) and European Patent Office (EPO), including prior art cited in the international stage, and rejects pending claims in view of the prior art cited in said US or EP prosecution.

Thus, if prior art was cited in either the US or the EP case, it is most likely that the same prior art will be cited in the MX application, with similar arguments or arguments adapted according to the legislation and criteria of the MXPTO. Amending the claims as per the corresponding granted foreign application usually fast-tracks the Mexican application towards allowance. A divisional application can also be filed, to try and obtain a broader scope of protection, similar to the US continuation practice.

However, waiting for an Office Action and amending the claims, as allowed in the foreign case, can usually take around 2 years or more after entering the MXPTO phase.

That will change though, now that the MXPTO has signed Patent Prosecution Highway (PPH) programs with the USPTO, the Spanish Patent and Trademark Office (OEPM), the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO) and, most recently, with the State Intellectual Property Office of the People’s Republic of China (SIPO). Applicants from the US, Spain, Japan, Korea and China, will benefit from an expedited grant of the Mexican application, all in a matter a months.

The timeframe

It is common practice that a non-provisional US application is filed alongside the PCT application. Therefore, the prosecution of the US non-provisional application is completed near the 30-month time frame provided by PCT to enter different National Phases. As a result, when filing the National Phase, the US patent has often already been granted.

Publication of a Mexican application takes place after about 18 months, either after filing the application or from the filing date of the claimed priority. Given that National Phases of PCT applications enter 30-months after the original application, publication of the National Phases of PCT applications occurs a few months after completing formalities. If formalities were complete when filing the National Phase, publication of the National Phases of PCT applications takes place a few months after entering the National Phase. In other words, publication can take place in a time frame of between 4 to 8 months after filing the National Phase application at the MXPTO.

Although the PPH request can be filed prior to publication of the Mexican application, the correct timing for filing the request is once the application has been published, in other words once formalities have been completed. PPH requests can be filed anytime prior to initiation of substantive examination. Therefore, if a patent or a Notice of Allowance has been obtained in any of the above Legislations, or if an Office Action has been issued stating that at least one claim is patentable, PPH may be requested at the MXPTO, but only as long as substantive examination has not started for the Mexican application.

Diagram 1 is a simplified example of a Mexican patent prosecution, demonstrating when the PPH request may be filed:

Granted PPH requests

The PPH request will move forward to its allowance if:

a) the Mexican application is a Paris Convention application or a National Phase application and it validly claims a US, JP, ES, KR or CN priority;

b) the Mexican application is a Paris Convention application or a National Phase application and it validly claims a PCT priority which has no priority claim; or

c) the Mexican application is a National Phase application which has no priority claim.

As such, the MXPTO needs to prove that there is a relation between the Mexican application and the granted US, JP, ES, KR or CN patent. For example, the Mexican application could be amended to match the claims of a US continuation or a divisional patent, as long as it keeps a relationship with the parent application or patent. To such end, in the PPH request the Mexican attorney needs to point out the relationship between the Mexican application and the foreign patent.

Furthermore, an amendment to the pending claims also needs to be filed, that is, the claims of the Mexican application need to be amended to match those being granted. Although an exact match of the claims is not required, amending them to mirror the allowed claims is usually preferred by the MXPTO to simplify prosecution. According to the PPH programs, the patentable claim(s) must be “sufficiently corresponding”, which the MXPTO interprets as when the claims have the same or similar scope. In other words, the claims must be amended to contain the same technical features which are novel and inventive over the prior art. Claims corresponding to a different category than those being allowed abroad are not considered to be “sufficiently corresponding”, and will most likely lead to a possible Office Action.

The Mexican attorney also needs to provide the MXPTO with a claim relationship table, wherein each filed claim needs to be correlated with a claim that was previously filed, if there is such a relationship.

If the PPH request does not comply with all the requirements, the MXPTO provides a second opportunity to re-file the request.

Tips when filing a PPH request

Tip 1: US Continuation-in-Part (CIP) patents

Although the claims can be amended to match those of a CIP, make sure that the claims are properly supported in the Mexican application, otherwise, amending the claims to the CIP will lead to an objection due to lack of support.

Tip 2: Is the scope of the foreign patent broad enough?

From time to time, the best manner to obtain a patent is by letting allowable matter grant, and filing a continuation or divisional application to pursue a broader scope or non-pursued matter. If a PPH request is filed and granted, please note that a divisional application may be filed for the non-prosecuted matter.

Tip 3: Non-patent literature (NPL)

Along with the PPH request, a copy of the US Information Disclosure Statement (IDS) or equivalent needs to be filed. A copy of NPL documents also needs to be filed. Patents which may be obtained from the internet do not need to be filed.

Tip 4: Foreign Office Actions

Along with the PPH request, a copy of all the Office Actions emitted abroad needs to be filed unless they are obtainable from a public source, such as from the PAIR website.

Tip 5: Expedited publication

If the application was filed to meet all the formalities, expedited publication may be requested upon payment of a fee. Such a request may be made when filing the application.

Tip 6: Non-inventions

Mexico has several non-inventions, including methods to carry out mental acts, games or business, computer programs and surgical, therapeutic or diagnose methods applicable to the human body and/or relative to animals. Amend these claims, or request the Mexican attorney to amend these claims into an allowable format.